The following arguments will be available to the public live, both in-person and through online audio streaming. Access information will be available by 9 AM ET each day of argument at:

Tuesday, October 3, 2023

Weber, Inc. v. Provisur Technologies, Inc., No. 22-1751, -1813, University of Georgia School of Law - Hatton Lovejoy Courtroom

Provisur Technologies, Inc. ("Provisur") sued Weber, Inc. ("Weber") in the Western District of Missouri alleging infringement of U.S. Patent No. 10,625,436 ("the '436 patent") and U.S. Patent No. 10,639,812 ("the '812 patent") describing high-speed food article slicing machines. In turn, Weber filed two petitions for inter partes review ("IPR") challenging the validity of the '436 patent and the '812 patent. In both petitions, Weber contended that the challenged claims would have been unpatentable as obvious over prior art including 2006 and 2010 Operating Manuals for Weber's CCS 904 Slicer ("the Manuals"). The Patent Trial and Appeal Board ("the Board") instituted review of both petitions. In its Final Written Decisions, the Board found that Weber did not establish by a preponderance of the evidence that the Manuals constituted "printed publications" under 35 U.S.C. § 311(b). As a result, the Board held that the challenged claims of the '436 patent and the '812 patent were not unpatentable. Weber appealed.

On appeal, Weber argues that the Board erred in determining that the Manuals are not printed publications. Weber asserts that the Manuals were widely disseminated to customers and could have been accessed through multiple channels, including at tradeshows and at Weber facility open houses. Weber contends that such evidence of public accessibility has previously been affirmed by the Federal Circuit, citing precedent such as In re Enhanced Security Research, LLC, 739 F.3d 1347 (Fed. Cir. 2014). Weber also argues that the Board improperly fixated on actual customer access rather than public accessibility by failing to consider whether the Manuals were otherwise publicly accessible to interested members of the relevant public. Weber further argues that the Board incorrectly found that the Manuals' copyright notice imposes a confidentiality restriction that negates a showing of public accessibility because the notice's language would only impose theoretical restrictions on third-party transfer.

Provisur argues that the Board correctly found, based on substantial evidence, that the Manuals had limited distribution and were accessible only subject to multiple layers of confidentiality restrictions, thus precluding public accessibility to qualify as "printed publications." Provisur cited Cordis Corp. v. Boston Sci. Corp., 561 F.3d 1319, 1333 (Fed. Cir. 2009), in which the Court found that "where a distribution is made to a limited number of entities, a binding agreement of confidentiality may defeat a finding of public accessibility." Provisur further argues that there is an expectation of confidentiality for product manuals based on industry norms, which restricts the distribution and accessibility of the Manuals.

Tuesday, October 3, 2023

Luv N' Care, Ltd. v. Laurain, No. 22-1905, University of Georgia School of Law - Hatton Lovejoy Courtroom

Lindsey Laurain sent Luv N' Care ("LNC") a cease-and-desist letter during the prosecution of Laurain's U.S. Patent Application No. 14/333,682 ("the '682 application") directed towards a surface contact self-sealing integrated tableware and dining mat. The '682 application later issued as U.S. Patent No. 9,462,903 ("the '903 patent"). LNC sought declaratory judgment from the District Court for the Western District of Louisiana that LNC had not violated "any existing intellectual property right of the Defendants" Laurain and Eazy-PZ, LLC ("EZPZ"), the assignee of the '903 patent. The district court found on summary judgment that the claims of the '903 patent were invalid and unenforceable as obvious under 35 U.S.C. § 103 and dismissed EZPZ's infringement counterclaims with prejudice. Following a bench trial, the district court further found that EZPZ engaged in "deceit and reprehensible conduct," warranting the dismissal of its remaining claims due to unclean hands. At the same time, the district court determined that LNC failed to prove that the '903 patent should be rendered unenforceable due to inequitable conduct. No damages were awarded to either party. LNC appealed.

On appeal, LNC argues that the district court's conclusion that Laurain did not commit inequitable conduct should be overturned. Specifically, LNC argues that the district court erred by failing to find Laurain's misrepresentations to the USPTO as but-for material, because the misrepresentations concerned key issues of patentability and contradicted representations and arguments Laurain made to the USPTO about the prior art. LNC also argues that deceptive intent is demonstrated by Laurain misrepresenting evidence, submitting declarations containing known false statements, and withholding material self-sealing prior art. Additionally, LNC argues that the district court erred in failing to declare LNC the prevailing party, failing to apply the correct standard for determining an exceptional case, and finding LNC acted improperly, thereby denying attorneys' fees and costs. LNC argues that there can be no reasonable dispute that LNC is the prevailing party because LNC proved both the obviousness of the '903 patent and EZPZ's unclean hands by clear and convincing evidence. As such, LNC asserts that they are "prima facie entitled to costs," citing Pacheco v. Mineta, 448 F.3d 783, 793-94 (5th Cir. 2006). Additionally, LNC argues that the court's determination that EZPZ engaged in unclean hands throughout litigation, by definition, indicates litigation in an unreasonable manner and satisfies the standard set forth by Octane Fitness, LLC v. ICON Health & Fitness, Inc., 572 U.S. 545 (2014) for determining an exceptional case. LNC further argues that the district court failed to identify any actual misconduct by LNC to support the district court's denial of fees.

Laurain responds that no ground exists to reverse the finding of no inequitable conduct or the denial of attorneys' fees and costs, asserting that the district court properly determined no intent to deceive and appropriately exercised its discretion in denying attorneys' fees and costs. Additionally, Laurain argues that the district court erred in finding unclean hands because the identified acts did not rise to the level of "unconscionable acts" and further held no "immediate and necessary relation" to the relief sought by EZPZ in their infringement claims. Therefore, Laurain argues that dismissal of the infringement claims should be reversed. Laurain further argues that the district court's summary judgment order of invalidity of the '903 patent based on obviousness must be vacated because of impermissible and erroneous factual findings. Laurain further argues that the court ignored the requirement of "motivation to combine" multiple prior art references and did not give due consideration to secondary considerations.

Wednesday, October 4, 2023

Monterey Research, LLC v. STMicroelectronics, Inc., No. 22-1435, -1771, Courtroom 201

Advanced Micro Devices, Inc. ("AMD") and Qualcomm Inc. ("Qualcomm") both filed petitions for inter partes review ("IPR") of Monterey Research, LLC's ("Monterey") U.S. Patent No. 6,651,134 ("the '134 patent") (IPR2020-00985 ("the -985 IPR") and IPR2020-01492 ("the -1492 IPR"), respectively), each on different grounds involving different prior art references. After the Patent Trial and Appeal Board ("the Board") instituted review, STMicroelectronics, Inc. ("STM") was joined as a party to both the -985 IPR and the -1492 IPR. In its Final Written Decision on the -985 IPR, the Board found all claims of the '134 patent to be unpatentable as obvious over the prior art. STM was thus estopped from further challenging the patentability of these claims in the -1492 IPR. In its Final Written Decision on the -1492 IPR, the Board again found the challenged claims of the '134 patent to be unpatentable as obvious over the prior art. Monterey appealed. The Federal Circuit Court ordered the consolidation of the appeals arising from the -985 IPR and the -1492 IPR. AMD and Qualcomm filed notices of non-participation in the consolidated appeal, leaving STM as the lone appellee.

Upon appeal, Monterey argues that STM should not be permitted to appear as a party to the -1492 IPR appeal. Monterey argues that STM did not seek to appear as a party to the -1492 IPR appeal because they did not file appearances, certificates of interest, and docketing statements in the appeal. Monterey further argues that STM is estopped from participating in the -1492 IPR under 35 U.S.C. § 315(e) and therefore ceased to be a party to the -1492 IPR, citing Intuitive Surgical, Inc. v. Ethicon LLC, 25 F.4th 1035, 1043 (Fed. Cir. 2022). Monterey asserts that it would be inconsistent with the purpose of the estoppel provision to allow STM to argue, on appeal, against the validity of the '134 patent on the basis of art and arguments that only arose in the -1492 IPR.

STM responds that it is entitled to participate in the -1492 IPR appeal. STM argues that Monterey failed to object when the Federal Circuit consolidated the -985 IPR appeal and the -1492 IPR appeal, designating STM as the appellee in both, and thereby forfeited any argument that STM is not a party to the -1492 IPR appeal. STM further argues that it properly filed all documents only in the lead appeal, the -985 IPR appeal, as ordered by the Court. Additionally, STM argues that collateral estoppel applies to parties that have lost, not to parties that have won, citing B&B Hardware, Inc. v. Hargis Indus., Inc., 575 U.S. 138, 147 (2015). Moreover, STM argues that the Court will need to reach the -1492 IPR appeal only if it vacates the Board's final written decision in the -985 IPR appeal.

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